Friday, August 24, 2007

US Department of Patent Extension Denial (DOPED)

In these days of hysterics and panic, perhaps a return to basics is warranted:

35 USC § 120. Benefit of earlier filing date in the United States

An application for patent for an invention
disclosed in the manner provided by the first paragraph of section 112 of this title
in an application previously filed
in the United States, or as provided by section 363 of this title,
which is filed by an inventor or inventors named in the previously filed application
shall have the same effect,
as to such [disclosed] invention,
as though filed on the date of the prior application,
if filed before
the patenting or abandonment of or termination of proceedings on the first application or
[before the patenting or abandonment of or termination of proceedings] on an application similarly entitled to the benefit of the filing date of the first application
and if it contains or is amended to contain
a specific reference to the earlier filed application.

No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.

35 USC § 131. Examination of application

The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.

35 USC § 111. Application

(2) Contents.— Such application shall include—
(A) a specification as prescribed by section 112 of this title;
(B) a drawing as prescribed by section 113 of this title; and
(C) an oath by the applicant as prescribed by section 115 of this title.


Anonymous said...

I have not laughed so hard about the recent rule changes as I have in the last 5 minutes. Thank you! The caption to the BPAI entry is absolutely classic! (And it wouldn't be so funny if it wasn't ringing so true.) There's a serious battle going on.

Anonymous said...

"US Department of Patent Extension Denial (Doped)"

Was that a typo by any chance? Did you mean "Examination"?

Step Back said...

No. I meant extension.
You'll get your one supposed "examination" at the USPTO (eventually, if you live so long). However, if you realize that you disclosed more than initially claimed, they won't give you the opportunity to extend the scope of coverage even though 35 USC 120 entitles you to do so. Extension (or expansion) was the intended word. Maybe expansion would have been the better term.